This examination guide sets forth changes in the procedures for handling related applications, namely, companion and conflicting applications. The Trademark Manual of Examining Procedure ("TMEP") will be changed in accordance with this examination guide at the next revision.

I. Companion Applications

The term "companion applications" refers to pending applications filed by the same applicant. An application is pending until it registers or abandons. Pending applications include applications that have been approved for publication or for registration on the Supplemental Register; applications in the Intent-to-Use Division; and revived or reinstated applications.

When assigned a new application, the examining attorney must search the Office’s automated records to determine whether the applicant has any companion applications. If the applicant has companion applications, the examining attorney must proceed as follows:

Companion applications for the same or similar marks

If an applicant has multiple pending applications for the same or similar marks, the issues in the applications will be similar and all of the applications must be assigned to one examining attorney, to ensure consistent and efficient handling. The examining attorney must check the Trademark Reporting and Monitoring (TRAM) automated records system to determine whether the companion application has been assigned to an examining attorney.

If TRAM indicates that the companion application was previously assigned to a different examining attorney, the examining attorney must transfer his or her file to that person. If the companion application is unassigned, the examining attorney should send an e-mail request for the unassigned file to the Supervisory Legal Instruments Examiner in the law office where the file is located. If companion applications were assigned to different examining attorneys on the same day, the examining attorney must transfer the file to the examining attorney assigned to the application with the lowest six-digit serial number; the two-digit series code, e.g., 75, 76, or 78, should be ignored.

Companion registrations for the same or similar marks

If the applicant previously filed another application for the same or similar mark and that application has matured into a registration, the examining attorney should not transfer his or her application to the prior examining attorney. However, in the later application the examining attorney should act consistently with the registration, unless it would be clear error to do so.

The examining attorney may presume that the classification and identification of goods or services in a companion registration are acceptable. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion registration, the examining attorney should note the companion registration number in the "Notes to the File" section of the paper file wrapper.

Sometimes the classification and identification of goods or services in the prior registration will be clearly wrong. For example, the Nice Agreement classification system and Office policy on acceptable identifications change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion registration.

Companion applications and companion registrations for different marks

If an applicant has multiple pending applications, but the companion applications are not for the same or similar marks, examining attorneys should nottransfer the companion cases to one examining attorney. However, examining attorneys should act consistently in companion cases, unless it would be clear error to do so. If necessary, the examining attorney should review the case file for an earlier companion application before taking action in a later companion case. Similarly, if a companion application has matured into a registration, the examining attorney should act consistently with the registration, unless it would be clear error to do so.

If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion application or registration, the examining attorney should note the companion application serial number or registration number in the "Notes to the File" section of the paper file wrapper.

Sometimes the classification and identification of goods or services in the prior companion application or registration will be clearly wrong. For example, the Nice Agreement classification system and Office policy on acceptable identifications change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration.

II. Conflicting applications

The term "conflicting applications" refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), due to a likelihood of confusion between the marks. When assigned a new application, the examining attorney must search the Office’s automated records to determine whether there are any conflicting applications. If there are conflicting applications, the examining attorney must proceed as follows:

SUMMARY OF RELATED CASE POLICY

Facts

Tansfer required?

Examination procedure

Same applicant/Same or similar marks

Transfer case unless companion case is registered or abandoned.

Presume id and class in published companion applications and companion registrations are acceptable.

Act consistently on all issues unless clear error to do so.

Same applicant/Different marks

Do not transfer case.

Presume id and class in published companion applications and companion registrations are acceptable.